WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Realm Entertainment Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Aldo Leci
Case No. D2018-0406
1. The Parties
The Complainant is Realm Entertainment Limited of Ta’ Xbiex, Malta, represented by Ports Group AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Aldo Leci of Tiran, Albania.
2. The Domain Name and Registrar
The disputed domain name <mobilbahissitesi.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 23, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, Realm Entertainment Limited, is a provider of online gaming and gambling services, which includes poker, casino, and sports betting services. The Complainant runs several betting websites, such as <bets10.com>.
The Complainant is the holder of several European trademark registrations for the mark MOBILBAHIS, which it uses in connection with its business. The Complainant’s trademark portfolio includes the following two trademark registrations:
- MOBILBAHIS, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 016264921 on September 5, 2017 in classes 35, 36, 38 and 41.
- , combination mark registered with EUIPO under No. 016936007 on October 19, 2017 in classes 35, 36, 38 and 41.
The Complainant is also the holder of the domain name <mobilbahis.com>, registered on January 23, 2016 and used in connection with its online gaming and gambling services.
The Disputed Domain Name <mobilbahissitesi.com> was registered by the Respondent on March 21, 2016. The Disputed Domain Name appears to have been previously used to resolve to a website consisting of text written in Turkish and displaying sponsored links to and advertisements of betting websites. The Disputed Domain Name currently does not resolve to an active webpage.
On October 10, 2017, the Complainant sent a cease and desist letter to the Respondent requesting the immediate transfer of the Disputed Domain Name. The Respondent did not respond to this cease and desist letter.
5. Parties’ Contentions
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s business and trademark. The Complainant further claims that the Respondent has tried to take advantage of the Complainant’s trademarks or at the very least inflict damage on the Complainant’s business and that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks and service marks in which the Complainant has rights. The Complainant’s MOBILBAHIS mark has been registered (and used).
The Disputed Domain Name incorporates the Complainant’s MOBILBAHIS trademark in its entirety, merely adding the suffix “sitesi”.
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not negate confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,
WIPO Case No. D2012-1395, where the domain name
<karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with the addition of the word “download” because users typically download complainant’s software). The term “sitesi” is furthermore a common term in Turkish, meaning “website”.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
The Respondent is currently not making any use of the Disputed Domain Name. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the instant case, it is apparent that the Respondent’s registration of the Disputed Domain Name predates the Complainant’s first trademark registration by more than a year. Furthermore, apart from the predating registration of the Complainant’s domain name <mobilbahis.com>, the Complainant has not provided any details about the history of its business, nor any evidence that demonstrates that the Respondent, at the time of registration, could have been aware of the Complainant or his business.
Except in highly limited circumstances, when a domain name is registered before the complainant’s relied-upon right is shown to have been first established, the registration of the domain name is not in bad faith because the registrant could not have contemplated the Complainant’s then non-existent right. As a result, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent (see paragraph 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). However, bad faith could still be found in specific limited circumstances where the facts of the case establish that the Respondent’s intent in registering the domain name was to unfairly capitalize on the Complainant’s nascent trademark rights (see paragraph 3.8.2 of the WIPO Overview 3.0). The Panel finds that in the present case, the Complainant fails to show, and the facts of the case do not indicate that the Respondent had any bad faith intention when registering the Disputed Domain Name. The registration of the Disputed Domain Name predates the Complainant’s filing of its MOBILBAHIS trademark applications and the Complainant does not provide any evidence that at the time of registration of the Disputed Domain Name the Respondent was aware of the Complainant’s intention to file subsequent trademark applications.
Additionally, limited factual research by the Panel shows that the term “mobil bahis” is Turkish for “mobile betting” and the term “sitesi” for “website”. Therefore, the Panel notes that the dominant word elements of the Disputed Domain Name are descriptive. The Panel considers that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the domain name was to profit from and exploit the complainant’s trademark (see Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
While it can be argued that the logo previously used on the website connected to the Disputed Domain Name (as evidenced in Annex 7) is somewhat similar to that of the Complainant, in this Panel’s view, this is not sufficient to prove bad faith registration. Apart from some differences between the logos, the website previously connected to the Disputed Domain Name does not reference the Complainant and has been used in connection to the Disputed Domain Name’s dictionary meaning, namely “mobile betting site” (in Turkish).
It is thus this Panel’s view that the Complainant does not sufficiently show that the Respondent had registered the Disputed Domain Name with the intention of targeting or profiting from the Complainant’s (then unregistered) mark. The fact that the website displays links to the Complainant’s competitors is not entirely unjustifiable in light of the generic meaning of the Disputed Domain Name, and would not in the Panel’s view in this way create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement with or by the Complainant.
Furthermore, the Complainant does not provide any proof indicating that the Respondent’s aim in registering the Disputed Domain Name was to sell, rent, or otherwise transfer the Disputed Domain Name to the Complainant or to profit from and exploit the Complainant’s trademark. The Respondent has not offered to sell the Disputed Domain Name to the Complainant and the sponsored links and advertisements displayed on the website previously connected to the Disputed Domain Name all referred to websites relating to the descriptive terms “betting” or “bahis” without referring to the Complainant’s business.
Accordingly, this Panel finds that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: May 7, 2018